A trademark opposition is a legal challenge to the right to register a particular trademark. A trademark opposition is instituted by filing a notice of opposition with the Trademark Trial and Appeal Board and paying the required fee. The notice of opposition must be filed within 30 days of the date that the trademark application is published for opposition unless a request for an extension of time to oppose is filed with the Board (which is usually instantaneously granted). There are thousands of trademark oppositions filed every year, which certainly sounds like a lot but is actually quite small when compared to the number of applications filed annually.
A trademark opposition must allege one or more grounds for challenging a trademark application. Most often, a trademark application is opposed by someone who owns prior rights in an identical or confusingly similar trademark. But, trademark applications can also be challenged on an number of other grounds. For instance, oppositions may be based on the opposer’s belief that the trademark is merely descriptive, deceptively misdescriptive, generic, functional, or likely to dilute the distinctive quality of the opposer’s famous trademark. In addition to alleging a valid ground for opposition, the opposer needs to show that it has standing to oppose the application. In other words, the opposer must allege in the notice of opposition that it has a direct and personal stake in the outcome of the proceeding and that it could be harmed by the registration of the trademark.
Shortly after a notice of opposition is filed, the Board will institute the opposition proceeding, assign it a proceeding number, and notify both parties of the schedule the opposition will follow. This schedule informs the parties of many important dates and deadlines by which certain actions must be taken. However, the schedule can be quite easily amended through mutual agreement between the parties and approval by the Board.
Once the opposition schedule is issued, the owner of the application has 40 days in which to properly respond to the notice of opposition. If no response is filed, a default judgment is entered against the owner of the application, the opposition is sustained in favor of the opposer, and the application goes abandoned. If a response is filed, then the opposition will simply go forward as set out in the schedule. In the event the owner of the application is eventually successful in defending the opposition, the application will be allowed to proceed through the registration process. On the other hand, if the Board rules in favor of the opposer, the worst that can happen is that the application goes abandoned. Under no circumstances can the Board award any type of monetary damages, attorneys’ fees, or other financial compensation to either party.
If you have received notice that your trademark application has been opposed, the best thing you can do is immediately seek the assistance of an experienced and knowledgeable trademark attorney. A trademark lawyer will carefully review the opposition and perform any necessary research into the individual or business that filed the opposition. Your trademark attorney will then be able to properly advise you as to what course of action would be in your best interest. Sometimes, it simply is not worth the cost and aggravation of defending a trademark opposition, especially if you have not yet invested a lot of time and money into developing and implementing your trademark.
If you have any questions about pursing a trademark opposition against someone else’s application, or need some help defending an opposition filed against your trademark application, please do not hesitate to contact me for an absolutely free consultation. I hope to hear from you soon.